Nana focuses her practice on patent litigation, and handles cases at the International Trade Commission, in federal district courts, and in the US Court of Appeals for the Federal Circuit. She has litigated matters involving high tech, biologic, and chemical innovations, including Hatch-Waxman cases.
Nana serves as a key member of case teams at all stages of litigation, including as primary technical associate. In this capacity, she collaborates in the day-to-day with expert witnesses, and is involved in the development of infringement/non-infringement and validity/invalidity theories. She also handles domestic industry economic analysis in Section 337 cases. She routinely has a lead role in pre-suit diligence, fact and expert discovery, claim construction, preparing fact witnesses and expert witnesses for deposition, motion practice, trial preparation, and post-trial briefing.
Prior to joining Mintz, Nana served as a judicial law clerk to the now-retired Hon. Andrew R. Grainger of the Massachusetts Appeals Court.
While earning her law degree, Nana served as a judicial intern to the Hon. Norman H. Stahl, a Senior Judge of the US Court of Appeals for the First Circuit, and was a legal intern with Greater Boston Legal Services’ Asian Outreach Unit. In law school, Nana was a senior staff editor of the Northeastern University Law Journal.
Prior to law school, Nana spent several years conducting bacterial immunology R&D at the Cambridge, Massachusetts location of a global company that specializes in the development of new vaccines.
Experience
- Truveris, Inc. v. SkySail Concepts, LLC (Fed. Cir. 23-1024) - Represented SkySail Rx as Defendant-Appellee in an appellate case adverse to Truveris related to a patent for a computer system that manages the selection of prescription drug plans. The Federal Circuit issued a per curiam summary affirmance of the District Court’s order granting SkySail’s motion to dismiss the case.
- Truveris, Inc. v. SkySail Concepts, LLC, NDOH-1-21-cv-01262 – Defended SkySail against allegations of patent infringement of a computer system that manages the selection of prescription drug plans. The District Court granted SkySail’s motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101. The District Court granted the motion because the asserted claims of plaintiff’s prescription drug plan selection management patent encompassed unpatentable subject matter and found that that the claims were directed toward an abstract idea.
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
- Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation was instituted in March of 2019 and resolved favorably prior to the conclusion of discovery in August of 2019.
- Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
- Kowa Company, Ltd., et al v. Amneal Pharmaceuticals, LLC, 2018-1051 (Fed. Cir.) – Successfully represented appellees Kowa Company, Kowa Pharmaceuticals America, Inc. and Nissan Chemical Corporation at the Court of Appeals for the Federal Circuit, against Amneal Pharmaceuticals. The Federal Circuit affirmed the judgment of the U.S. District Court for the Southern District of New York (Crotty, J.), upholding the validity and infringement of two patents owned by our clients. Oral argument took place on Thursday, December 6, 2018, and the Court issued its judgment early Monday morning, December 10.
viewpoints
Federal Circuit affirms Safe Harbor ruling and $70 million award in Amgen Inc. v. Hospira, Inc.
December 20, 2019 | Blog | By Thomas Wintner, Peter Cuomo, Nana Liu
On December 16, 2019, the Court of Appeals for the Federal Circuit issued an opinion that fully upheld the District of Delaware’s denial of Hospira, Inc.’s motion for judgment as a matter of law (JMOL), or alternative motion for new trial, in Amgen Inc. v. Hospira, Inc., Nos. 2019-1067, 2019-1102.
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District Court denies motion to dismiss despite Federal Circuit’s finding of patent invalidity in appeal of parallel ITC investigation
December 18, 2019 | Blog | By Andrew DeVoogd, Nana Liu
On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al., 3-16-cv-00364 (N.D. Tex.). Diebold filed the motion after the Federal Circuit reversed the International Trade Commission’s (“ITC”) finding of infringement in a parallel Section 337 investigation. Instead, the Federal Circuit held that the one patent in the suit was invalid due to indefiniteness.
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New revised USMCA trade deal affects intellectual property rights, but not exclusivity period for biologics
December 17, 2019 | Blog | By Thomas Wintner, Nana Liu
On December 10, 2019, an agreement was reached between the United States, Mexico, and Canada on amendments to the U.S.-Mexico-Canada Agreement (“USMCA”). The USMCA, if ratified by each respective country, would replace the North American Free Trade Agreement (“NAFTA”), which has been in effect since January 1, 1994.
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ITC rejects minimum threshold requirement for domestic industry economic prong and emphasizes the importance of contextual evidence and case-by-case analyses
November 4, 2019 | Blog | By Michael Renaud, Andrew DeVoogd, Matthew Karambelas, Nana Liu
In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial determination (“ID”), finding no domestic industry in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. (Oct. 28, 2019).
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Collateral estoppel does not attach to PTAB invalidity determination pending appeal
October 10, 2019 | Blog | By Adam Samansky, Peter Cuomo, Nana Liu
Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted patent claims that were found to be obvious by the Patent Trial and Appeal Board (“PTAB”).
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ITC suggests 5% Threshold for Domestic Industry Assessment; order may impact tech companies
September 23, 2019 | Blog | By Michael Renaud, Andrew DeVoogd, Matthew Karambelas, Nana Liu
Recently, Chief Administrative Law Judge (“CALJ”) Bullock of the U.S. International Trade Commission (“ITC”), in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Order No. 77, suggested that “significant” or “substantial” domestic industry investments must amount to greater than 5% of domestic industry product sales in the United States.
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Recent ITC Ruling Highlights Ability of Patentees to Rely on Accused Infringers’ Investments to Satisfy Domestic Industry Requirement and Potential Pitfall of Affirmative Defense
August 27, 2019 | Blog | By Michael Renaud, Nana Liu
On July 1, 2019, Administrative Law Judge (“ALJ”) Elliot of the U.S. International Trade Commission (“ITC”) issued a ruling indicating that it may be possible for complainants to rely on respondents’ products to satisfy the ITC’s domestic industry requirement in certain circumstances.
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Recent Decision Holds That Litigation Funding Does Not Harm Standing and Provides Tips for Negotiating Funding Agreements
August 26, 2019 | Blog | By Michael Renaud, Nana Liu
The August 13, 2019 decision from the United States District Court for the District of New Jersey in WAG Acquisition, LLC v. Multi Media LLC, Civil Action No. 2-14-cv-02340, deals a blow to a common attack on litigation funding. The decision protects the ability of plaintiffs who lack resources to enforce their patent rights by affirming that seeking funding does not necessarily harm standing.
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Federal Circuit Cautions Against Rigid Approach to Prosecution History Estoppel in Fourth Appeal from ALIMTA® Litigations
August 19, 2019 | Blog | By Adam Samansky, Peter Cuomo, Nana Liu
On August 9, 2019, the United States Court of Appeals for the Federal Circuit, in Eli Lilly & Co. v. Hospira, Inc., Nos. 2018-2126, 2127, 2128, reversed in-part and affirmed in-part a district court’s determination of infringement. The Federal Circuit reversed the district court’s finding of literal infringement but ultimately affirmed judgments of infringement based on the doctrine of equivalents.
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News & Press
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
Law360 published an article written by Members Michael Renaud, Marguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.
Samsung, LG Settle DivX Patent Fights Over Smart TVs
July 30, 2021
Law360 reported that Mintz client American video codec company DivX, an early innovator in the digital streaming video and digital rights management scene, has reached confidential settlements with LG and Samsung, resolving international litigation claiming they infringe DivX’s streaming patents with their smart televisions. The Mintz team representing DivX is led by Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member Adam Rizk and includes Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Members Keith Carroll, Marguerite McConihe, Michael McNamara, Samuel Davenport, and Daniel Weinger, and Associates Matthew Karambelas, Jessica Perry, and Nana Liu.
Victory on Appeal After Lengthy Litigation Over Cholesterol Inhibitor
December 14, 2018
Recognition & Awards
Ranked by Patexia among the Most Active ITC Attorneys Representing Complainants (2024)
Ranked by Patexia among the Best Performing ITC Attorneys Representing Complainants (2024)
Involvement
- Volunteer, Civil Appeals Clinic, Volunteer Lawyers Project of the Boston Bar Association
- Volunteer, New England Legal Foundation
- Mentor, Minds Matter Boston
Recent Insights
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
Law360 published an article written by Members Michael Renaud, Marguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.
